Trademarks Use or Loose them!
The United States trademark law is based on the common law first to use in commerce theory. Is the use of the mark in interstate commerce which creates rights over a trademark, not its registration! In the United States, US Applicants can base their applications on the following basis: Prior use of the trademark in interstate commerce, or; […]
Can I register the name, portrait, or signature identifying a particular living individual?
The short answer is yes, with written consent. More often than not, small business owners and entrepreneurs decide to use their name or last name to identify their products or services being provided. Trademark registration will be refused if consists of or comprises a name, portrait, or signature identifying a particular living individual except by […]
Update on the Booking.com Case and the use of generic trademarks and top-level domain names
In a most expected decision, on June 30, 2020, The Supreme Court of the United States ruled that adding “.com” to a generic word can make the entire combination eligible for trademark protection. Thus, affirming The U.S. District Court for the Eastern District of Virginia decision reversing the denial of registration by the USPTO of booking.com […]
Can I prevent others from reselling my trademarked products?
In the U.S. “courts have recognized a basic limitation on the right of a trademark owner under the Lanham Act to control the distribution of its own products.” See Prestonettes, Inc. v. Coty, 264 U.S. 359, 44 S.Ct. 350, 68 L.Ed. 731 (1924), courts have consistently held that, with certain well-defined exceptions, the right of a producer to control distribution […]
USPTO issues a Notice of Waiver of Trademark-Related Timing Deadlines.
Please note that the USPTO Remains Open for Filing Documents and Fees. UPDATED APRIL 30th. However, yesterday March 31, 2020, EXTENDED ON APRIL 30th, in accordance with the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO or Office) issued a Notice extending the time to file […]
Can I protect as trademark Coronavirus, COVID-19 or SOCIAL DISTANCING?”
In short, most likely no. Would you be able to prevent others from using said terms, also no. As of today March 20, 4 trademarks using the term Social Distance, 18 using the term CORONAVIRUS, and more than 17 using the term COVID-19 have been filed with the US Trademark Office. Marks such as CORONAVIRUS […]
My trademark was rejected because was considered to be ornamental what can I do?
Under the Trademark Act, a “Subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not […]
Can I trademark a design of a product?
This is one of the most difficult trademarks to register. A recent Trademark Trial and Appeal Board (TTAB) decision is illustrative on how the US Trademark Office treats product configuration applications. On May 2019 the TTAB In re Creative Edge Design Group, Ltd., Serial No. 87287662 affirmed the refusal, under Section 2(e)(5) finding the design […]
Can I trademark single or multiple colors?
The short answer, it depends. Single or multiple color marks applied to packaging are never inherently distinctive. Marks that are inherently distinctive are those that have the ability upon being used the very first time to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the […]
Can I trademark the title of a single work (Book or DVD)?
The short answer, it depends. The title of a single creative work, such as a book, is not considered a trademark and is therefore unregistrable. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127; In re Cooper, 254 F.2d 611, 117 USPQ 396, 400 (CCPA 1958). This because the title […]